Citigroup Inc. v. Kevin Goodman
Claim Number: FA1506001623939
Complainant is Citigroup Inc. (“Complainant”), represented by Brian J. Winterfeldt of Katten Muchin Rosenman LLP, Washington, D.C., USA. Respondent is Kevin Goodman (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citi.club>, registered with Go France Domains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 11, 2015, Go France Domains, LLC confirmed by e-mail to the Forum that the <citi.club> domain name is registered with Go France Domains, LLC and that Respondent is the current registrant of the name. Go France Domains, LLC has verified that Respondent is bound by the Go France Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@citi.club. Also on June 12, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the CITI mark to identify itself as an American multinational banking and financial services corporation.
Complainant has registered the CITI mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 00002216234, registered December 3, 1999), which demonstrates its rights in the mark.
The <citi.club> domain name is confusingly similar to the CITI mark as it simply adds the generic top-level domain (“gTLD”) “.CLUB.”
Respondent has no rights or legitimate interests in the <citi.club> domain name. Respondent is not commonly known by the disputed domain name or any variant of the CITI mark. Additionally, Respondent is not making a bona fide offering of goods or services through the at-issue domain name or making a legitimate noncommercial or fair use. Further, Respondent lacks rights and legitimate interests in the domain name based on the fact that it offered the domain name for sale.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent offered the at-issue domain name for sale or lease in an amount in excess of its out-of-pocket costs. Second, Respondent drew Internet users to his website so as to increase the profitability of the website by generating sponsored advertising revenue. Finally, Respondent had actual and/or constructive knowledge of Complainant’s rights in the CITI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CITI mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent used the at-issue domain name to offer it for sale and to redirect Internet users to its own website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of UKIPO trademark registrations for the CITI trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent forms the at-issue domain name by simply appending the top-level domain name “.club” to Complainant’s CITI mark. The resulting differences between Respondent’s domain name and Complainant’s trademark do not differentiate the two under Policy ¶ 4(a)(i) and to the contrary the use of the suggestive term “club” in the top-level domain name adds to the confusion. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Therefore, the Panel finds that the <citi.club> domain name is confusingly similar to Complainant’s CITI mark.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Kevin Goodman” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <citi.club> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the disputed domain name to redirect Internet users to its <timesdirect.net> website. The website purportedly offers aggregated news media and sponsored commercial advertising links. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”);see also Trans Global Tours, LLC v. Yong Li, FA 196166 (Nat. Arb. Forum Nov. 1, 2003) (finding that the respondent was not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because it was diverting Internet users to a search engine with pop-up advertisements). Likewise, offering the domain name for resale is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent offered the <citi.club> domain name for sale or lease at prices well above even its alleged but unverified acquisition costs. Email correspondence between the Parties shows that Respondent lied to Complainant about its out-of-pocket costs regarding the domain name. When Complainant asked Respondent was unable and/or unwilling to document or even explain the basis for the alleged costs relating to the domain name. Therefore, the evidence shows that Respondent registered <citi.club> primarily for the purpose of transferring it for a profit and demonstrates Respondent’s bad faith registration and use of the <citi.club> domain name pursuant to Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Further and as mentioned above, Respondent used the at-issue domain name to redirect Internet traffic to its own website. By doing so Respondent intended to capitalize on Complainant’s notoriety, increase Internet traffic to its <timesdirect.net> website and ultimately enhance the advertising revenue it fostered. Respondent’s use of the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Finally, Respondent registered the <citi.club> domain name knowing that Complainant had trademark rights in the CITI mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s coupling of the suggestive term “club” to the mark in forming the <citi.club> domain name. What’s more, in its email exchange with Complainant Respondent prevaricated about the domain name’s being registered to support an entity called “Century International Technology Institute Club.” There is no evidence whatsoever of such an entity and Respondent’s lack of veracity in dealing with Complainant highlights Respondent’s propensity to act in bad faith. Respondent’s contrived yarn about an entity called “Century International Technology Institute Club” being the basis for registering the <citi.club> domain name also shows that Respondent knew of Complainant when it registered the domain name since Respondent apparently had, and has, no credible good faith reason for creating and registering the <citi.club> domain name. Given the forgoing it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <citi.club> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citi.club> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2015
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